Normally, only the party offering or supplying to the domestic market is liable for patent infringements in the patent-protected domestic market. However, there are situations in which an act taking place abroad has patent infringing effects on the domestic market. For example, under what conditions is a supplier based abroad liable to a car manufacturer based abroad if the car manufacturer’s vehicles are also on the market in Germany?

The patent holder, a Japanese company, successfully took legal action against the defendant company in the first instance for supplying patent-infringing tire repair kits. The Regional Court ordered the defendant to cease and desist, pay damages and recall the products from its domestic distribution network.

The defendant has appealed against this. For its part, the plaintiff filed a cross-appeal and requested that the deliveries to the foreign car manufacturer should also be covered by the judgment of the court of first instance. The defendant had known that this manufacturer also supplied to Germany.

The Karlsruhe Higher Regional Court (OLG) dismisses the defendant’s appeal and confirms the judgment of the court of first instance in this respect. It considers the cross-appeal to be admissible but not substantiated.

The OLG summarizes the jurisprudence of the highest courts to the effect that the supplier domiciled abroad can only be held liable for patent infringement for deliveries to a foreign customer if it is aware that the foreign customer is also delivering (directly or indirectly) to the domestic market as intended. This means that the supplier consciously and willfully contributes to the patent-infringing domestic distribution. However, it is not sufficient if the supplier merely believes that domestic distribution is possible and accepts it. Without the supplier’s knowledge, there is no sufficient domestic connection.

In the present dispute, the plaintiff has not provided any concrete evidence that the defendant was aware of the car manufacturer’s deliveries to Germany. The fact that the package insert also contains instructions in German does not necessarily constitute knowledge. There may also be other reasons for this, such as the fact that the product can reach Germany by other permissible means and must therefore be understandable here. Also the fact that the defendant advertises on its homepage that it offers the product to all globally active car manufacturers. At most, this indicates the possibility, but not actual knowledge.

Thus, the deliveries to the foreign car manufacturer are not covered by the judgment of the Regional Court.

Note: On the one hand, the ruling shows that a supplier of patented products based abroad cannot simply escape responsibility for a German patent infringement by making “indirect” deliveries to the patent-protected domestic market can escape liability for a German patent infringement. On the other hand, the judgment makes it clear that acts taking place abroad can only lead to liability for patent infringement in Germany if the foreign supplier knows that the foreign customer will supply the product to the patent-protected country.

Links: lrbw.juris.de/cgi-bin/laender_rechtsprechung/document.py